Several former USPTO administrative patent judges now in private practice, including my collegaue Lee Barret, have collaborated to publish the new book y trials of the AIA, derivation, supplemental examination, and more, the perspective of these former insiders will serve as an invaluable reference.
The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is changing the perspective of the judiciary on staying litigation pending USPTO proceedings.
As most are aware, the old patent reexamination system, at least on the inter partes side, has been replaced by IPR. IPR must be concluded by statute within 12-18 months, a marked improvement over the (roughly speaking) previous 6 year path through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). These changes are being quickly recognized by courts, several of which have agreed to halt litigation proceedings upon the mere filing of an IPR (months in advance of an Order to grant the IPR petitions).
Previously, when a patent reexamination was the basis for the motion to stay the court proceeding, the strongest plaintiff arguments in opposition were: (1) the significant USPTO delay would prove prejudicial to the plaintiff; and (2) the SNQ standard of patent reexamination led to a 97% grant rate—both of these arguments are now falling very flat.
Continue Reading Stay of Litigation Pending USPTO Review Now a Much Easier Call for Judiciary
Joinder practice at the Patent Trial & Appeal Board (PTAB) provides strategic opportunities for members of Joint Defense Groups (JDG). JDGs are especially common in patent troll assertions. Petitions from JDG co-defendants for joinder of an ongoing post grant patentability trial (i.e., IPR, PGR or CBM) that are filed within one month of trial institution and do not raise substantial issues beyond those presented in the previously granted petition, or those that simply file a copy of the previously granted petition, are likely to be liberally granted. Such joinder practice enables JDG co-defendants to actively participate in the ongoing post grant proceeding before the PTAB. As can be appreciated, through joinder, individual joint defense group members can secure the opportunity to participate in a proceeding they would otherwise have no control over, or no recourse should the original petitioner decide to settle.
Interestingly, the 12 month window of 35 U.S.C. § 315(b) that prevents defendants from pursuing an IPR beyond the 12 month anniversary of a service of complaint for patent infringement of a subject patent does not apply to joinder petitions (such as might typically be desired by JDG co-defendants). The legislative history on this exception is scant, but, the thinking seems to be that once a post grant patentability proceeding is seasonably initiated,the PTAB should be able to receive input from all interested parties.
Recently, in Microsoft Corp v. Proxyconn Inc. (IPR2013-00109, here) the PTAB has further clarified that joinder practice is not only a tool for “joinder of parties” to an existing post grant trial proceeding, but may also be leveraged to join together two proceedings of a same petitioner (as long as the first is seasonably presented). This “joinder of claims” practice may be especially helpful for those petitioners battling patent trolls.
Continue Reading Joinder Practice at PTAB Accounts for Common Patent Troll Tactic
For those seeking CLE in the coming months, there are numerous upcoming options. The Spring Meeting of the Intellectual Property Law Section of the American Bar Association (ABA-IPL) will convene on April 3-5th in Arlington Virginia. On Thursday April 4th, the meeting will kick off with the program “Patentability Trials
Parties to an Inter Parties Review (IPR) proceeding may obtain “limited discovery” at the USPTO’s Patent Trial & Appeal Board (PTAB). Such discovery is limited as it must fall in an accepted class of discovery, namely, “routine discovery” or “additional discovery.”See Rule § 42.51. Routine discovery is generally categorized as: (1) any exhibit not otherwise publicly available or served, (2) cross examination of a declarant, and (3) non-cumulative information that is inconsistent with a position taken by the party before the PTAB.
“Additional discovery” defines everything outside of the above noted categories. To seek such additional discovery in an IPR an “interest of justice” need must be demonstrated…quite difficult in all but the most exceptional of circumstances.
As IPRs are patentability trials based on publicly available patents and printed publications, categories (2) and (3) of routine discovery provide the only significant opportunity for discovery. Of course, category (2) is straight forward enough—if there is a declarant submitting testimony— that declarant can be deposed. This leaves category (3) which, as I predicted last April, will be cited by patent owners seeking to embark on district court style fishing expeditions in the name of purported “secondary considerations of non-obviousness.” As made clear last week in the very first IPR filing, IPR2012-00001 (Garmin International Inc, et al v. Cuozzo Speed Technologies LLC) the PTAB is having none of it. (here)
Continue Reading PTAB Denies District Court Style Discovery Antics
160+ Petitions on File in First 6 Months
Yesterday, at the Practicing Law Institute’s USPTO Post Grant Trials- 2013, the USPTO provided an update on the demand for the post grant patentability trials introduced by the America Invents Act this past September. (AIA). As shown in the slide below, the demand has been quite
Back on September 16, 2012, the America Invents Act (AIA) replaced the old inter partes patent reexamination system with a new proceeding, known as Inter Partes Review (IPR). Since petitions for IPR are not handled by patent examiners, but instead, the judges of the Patent Trial & Appeal Board (PTAB), the USPTO’s Central Reexamination Unit (CRU) has experienced a significant cut to their incoming workflow. This change in workflow, coupled with the fact that requests for ex parte reexamination are also off by roughly 50% of pre-AIA filing rates, has resulted in an apparent benefit for patent challengers.
Ex parte patent reexamination requests are being processed faster.
Since the enactment of the America Invents Act (AIA) in September of 2011, the “patent reform” embodied by the AIA has been slowly rolling out. In fact, the bulk of the truly significant changes to patent law are only months old, some still weeks away. These changes include the change over to the first inventor to file model on March 16th, and the kick off of the new post grant patent proceedings 6 months back. With so much recent change it would seem premature to consider further changes to patent law until the last round has had time to take effect…but politicians disagree.
Evidently at least one Congressman feels that the AIA does not go far enough to combat patent “troll” lawsuits. Congressman Defazio of Oregon is sponsoring yet another bill entitled “Saving High-Tech Innovators From Egregious Legal Disputes Act.” The bill, like its 2012 predecessor, proposes that the costs (including attorney fees) of certain types of patent lawsuits should be recoverable from the Patentee once the court finds the patent invalid, or not infringed. The 2012 version of the bill was limited to software type inventions and mandated payment for only frivolous suits.
Continue Reading Loser Pays Patent Troll Legislation Flawed
State university technology transfer programs enjoy immunity from declaratory judgment (DJ) actions of patent invalidity/non-infringement. This is because state entities qualify for 11th amendment immunity from suits in federal district courts. So, absent the rare waiver of 11th amendment immunity, licensing targets of state university technology transfer programs have no recourse to proactively challenge the subject patents in the federal district courts.
The immunity benefit enjoyed by such state-run technology transfer licensing programs was most recently made clear in Cyanotech Corp. v. Valensa Intl. & The Univ. of Ill. (D.Haw) (here) In Cyanotech, the DJ action against the Univ. of Illinois was dismissed based on 11th amendment grounds.
Yet, a DJ action in the district courts is not the only avenue to challenge the validity of an issued patent in a forum more favorable to potential licensees. As demonstrated by early filings at the USPTO’s Patent Trial & Appeal Board (PTAB) universities are increasingly the target of Inter Partes Review (IPR) Filings.
Continue Reading University Technology Transfer Licensing Programs Challenged at PTAB
For those seeking CLE in the coming months, there are numerous upcoming options. The Spring Meeting of the Intellectual Property Section of the American Bar Association (ABA-IPl) will convene on April 3-5th in Arlington Virginia. On Thursday April 4th, the meeting will kick off with USPTO Director Teresa Stanek Rea